Friday, September 27, 2013

PTO empirical data, TM applications

Generally similar publication rate by filing basis, 75-80% range, but
ITU registration rate is much lower
than all the others, which are generally high.82% of attorney represented applications publish, with only 60% pro se.Sample of inexperienced applicants who filed
two applications, one pro se and one with counsel: 79% went to publication with
a lawyer, 61% without.61% went to
registration with a lawyer, 47% without.So that can’t show causation but it does show correlation.

Experience also matters a lot. Pro se applicants who file
fewer than 10 have 57% success rate, whereas 30 or more the rates are 81%
success without lawyers and 83% without.However, these repeat player pro
se applicants are often not really pro se—e.g., American Greetings.There may be a paralegal filing the
application, but there is in house counsel.

85% of population are either the least experienced pro se
applicants or the most experienced lawyers. 88% of lawyers fell into the 30 or
more category, while over 80% of pro se fell into the fewer than 10 category.

Similar patterns hold on impact on publication after office
actions are filed; the difference between the categories becomes bigger.

Key takeaways: Lawyers aren’t essential, but correlated with
success. Success increases at every experience level. Most applicants fell into
two categories—least experienced pro se and most experienced lawyers.Experienced counsel were far more successful.
Might be masking other causes, but very strong correlation.

Discussant: Kirsten L. Apple, USPTO

One implication: justification for increased PTO support for
pro se applicants—particularly need more guidance on how to address an office
action.

Explosion of applications and registrations in recent
years.What are determinants of firms’
decisions to apply for TMs?Lack of
integration of TM research with other domains, especially innovation & tech
management/marketing.

Focus on protection and registration of design elements of
TMs, such as shape or color.Looked at
impact of Qualitex and TrafFix.Looked at applications, divided into classes of companies by number of
applications on the theory that the response to litigation is likely to vary
with firm size and scope.Average annual
number of applications per firm/family, in design code 26 per firm/family,
color applications.Class 1: 70,000
firms, 1.3 million applications, 300,000 configuration applications, 1600 color
applications. Class 4 (bigger firms):
1400 firms, 670,000 applications, 122,000 configuration applications, 1000
color applications.Note that
configuration applications are a significant percentage, in the 20% range.

Findings: Qualitex
is significant at a TM family analysis.Might increase overall registration activity at brand but not firm
level. TrafFix had negative effect on
firm and family registrations.

Discussant: Graeme Dinwoodie, Oxford University

The cases at issue could be framed differently; this helps
us assess whether we’re surprised by the results.How typical/atypical cases about shapes and
colors are likely to be compared to word marks.The idea that Qualitex might
spur color registrations and TrafFix
wouldn’t is intuitive.Qualitex resolved a circuit split on
registrability/protectability of color alone—seen as liberalization, so
positive effects unsurprising. But other parts of Qualitex were important: requirement of secondary meaning, which
was important to Wal-Mart: a more
neutral/not pro-registration result.TrafFix must be taken in combination
with Wal-Mart as a signal that the
Court wanted a contraction of product design—a strong message, taken very
seriously by most courts. Again, this makes the result unsurprising.Hasn’t seen TrafFix’s caveat that ornamental designs can be registered used in
very pro-registrant ways.TrafFix arguably dampened TM
registration on two distinct classes of marks—patent extension cases (e.g.,
drug shape cases), which TrafFix killed,
and toughening up functionality even without a patent.

Suspicion is that what’s going on in shape cases is not
classical branding strategy, but rather sub silentio design protection given
the lack of sui generis/adequate design patent protection, which affects
whether you should think of design TMs as branding or rather as design
protection/patent extension.Qualitex suggests that in a global
marketplace, color and shape may become real branding mechanisms, but many
litigated cases don’t look like that.Useful information: how many cases/applications also involved a patent.

So other forms of legal protection for design might matter;
doesn’t seem to have been much change in copyright or design patent in the
relevant 1995-2000 period.But
protection of marks is often a decision made after the fact.Another option: §43(a), unregistered trade
dress. So whether application activity would reflect litigation activity is
unclear.IP as a portfolio of rights as
a way of achieving objectives.

Other bumps in the road during that period: a reform of
functionality law in 1998 that arguably made registration more useful for product
designs to shift the burden of proof.

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